Complainant is in the business
of communications services in connection with telephone calling and Internet
access services and registered the trade name "C-Com" on January 21, 1997.
Respondent registered the domain name <ccom.com> on August 14, 1997
to reserve for itself a generic domain name that combines the letter 'c,'
as a short-hand description for 'relating to computers,' and the top level
domain 'com,' as an abbreviation for communication and commercial.

HELD: Name Transferred
to Complainant.

Per Donahey and Terry: The Respondent
failed to produce evidence sufficient to rebut Complainant's allegations.
The use or absence of punctuation marks, such as hyphens, does not alter
the fact that a name is identical to a mark - such conduct is in and of
itself evidence of bad faith.

Moreover, Complainant's registration
of its service mark preceded Respondent's registration of the domain name
at issue. Thus, at the time Respondent registered the domain at issue,
it had constructive notice of Complainant's service mark.

Failure to make a bona fide use
of a domain name during a two-year period following registration constitutes
bad faith - "parking" of a domain name is evidence of bad faith registration
and use. Although Respondent's conduct does not bring it within any
of the illustrations of bad faith registration and use, all of the facts,
when taken together, are evidence of bad faith registration and use.

Per Sorkin (dissenting):
Complainant has alleged identicality but has not alleged confusing similarity.
The domain name registered by Respondent, "ccom.com," is plainly not identical
to Complainant's trademark for long distance telephone services, "C-COM."
A domain name that merely adds or subtracts a hyphen from a trademark is
almost certain to be found confusingly similar to that trademark, but it
clearly is not identical to the trademark. Respondent has no rights
or legitimate interests in respect of the domain name at issue.

The only fact properly before
this panel that relevant to the question of bad faith registration is that
Respondent registered the domain name "ccom.com" nearly seven months after
Complainant obtained its trademark registration for "C-COM." The
existence of a prior trademark registration does not automatically render
a domain name registration in bad faith.

Passively holding or "parking"
a domain name for an extended period may well be relevant to bad faith
use, but it does nothing to show that the name was originally registered
in bad faith. Complainant has failed to meet its burden of proving that
Respondent has registered and is using the domain name in bad faith.

1.1 The Complainant is Chernow Communications,
Inc., a corporation organized under the laws of the State of Colorado,
United States of America, having its principal place of business at 900
20th Street, Boulder, Colorado, United States of America.

1.2 The Respondent is Jonathan D.
Kimball, an individual having an address at 167 East 77th Street 3, New
York, New York, United States of America.

2. The Domain Name(s) and Registrar(s)

The domain name at issue is <ccom.com>,
which domain name is registered with Network Solutions, Inc., based in
Herndon, Virginia.

3. Procedural History

3.1 A Complaint was submitted electronically
to the World Intellectual Property Organization Arbitration and Mediation
Center (the "WIPO Center") on March 3, 2000, and the signed original together
with four copies was received on March 6, 2000. An Acknowledgment of Receipt
was sent by the WIPO Center to the Complainant, dated March 6, 2000.

3.2 On March 5, 2000, a Request for
Registrar Verification was transmitted to the registrar, Network Solutions,
Inc. ("NSI") requesting it to: (1) confirm that the domain name at issue
is registered with NSI; (2) confirm that the person identified as the Respondent
is the current registrant of the domain name; (3) provide the full contact
details (i.e., postal address(es), telephone number(s), facsimile number(s),
e-mail address(es)) available in the registrar's Whois database for the
registrant of the disputed domain name, the technical contact, the administrative
contact and the billing contact; (4) confirm that the Uniform Domain Name
Dispute Resolution Policy (the Policy") is in effect; (5) indicate the
current status of the domain name.

3.3 On March 6, 2000, NSI confirmed
by reply e-mail that the domain name <ccom.com> is registered with NSI,
is currently in active status, and that the Respondent, Jonathan D. Kimball,
is the current registrant of the name. The registrar also forwarded the
requested Whois details, and confirmed that the Policy is in effect.

3.4 The WIPO Center determined that
the Complaint satisfies the formal requirements of the Policy, the Rules
for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules")
and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy
(the "Supplemental Rules"). The Panel has independently determined and
agrees with the assessment of the WIPO Center that the Complaint is in
formal compliance with the requirements of the Policy, the Uniform Rules,
and the Supplemental Rules. The required fees for a three-member Panel
were paid on time and in the required amount by the Complainant.

3.5 No formal deficiencies having
been recorded, on March 8, 2000, a Notification of Complaint and Commencement
of Administrative Proceeding (the "Commencement Notification") was transmitted
to the Respondent (with copies to the Complainant, NSI and ICANN), setting
a deadline of March 27, 2000, by which the Respondent could file a Response
to the Complaint. The Commencement Notification was transmitted to the
Respondent by e-mail to the e-mail addresses indicated in the Complaint
and specified in NSI's confirmation. In addition, the complaint was sent
by express courier to the postal address given. Having reviewed the communications
records in the case file, the Administrative Panel finds that the WIPO
Center has discharged its responsibility under Paragraph 2(a) of the Uniform
Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
In any event, evidence of proper notice is provided by the evidence in
the record of the Respondent's participation in these proceedings.

3.6 On April 10, 2000, in view of
the Complainant's designation of a three-person panel, the WIPO Center
appointed David E. Sorkin and John Terry to serve as Panelists in Case
No. D2000-0119, having taken into consideration the panelist nominations
provided by the parties and having received Statements of Acceptance and
Declarations of Impartiality and Independence from each of them.

3.7 On April 10, 2000, the WIPO Center
gave each party a list of five candidates for the Presiding Panelists to
rank in order of preference. On April 20, 2000, the WIPO Center notified
the parties that M. Scott Donahey had been appointed as Presiding Panelist
and set the projected decision date as May 4, 2000. This date was later
extended to May 19, 2000.

4. Factual Background

4.1 Complainant registered the trade
name "C-Com" in Colorado.

4.2 Complainant is in the business
of communications services in connection with telephone calling and Internet
access services. Complainant's customers are located throughout the United
States. Complainant has expended money to advertise its services in the
telecommunications field and Complainant's mark and name have acquired
considerable good will and are assets of the business. Complainant
has done business under these marks for some years.

4.3 Complainant registered the service
mark with the United States Patent and Trademark Office and the registration
issued on January 21, 1997, for "communication services, namely long distance
telephone services." A copy of the registration was attached to the Complaint
as Exhibit A.

4.4 Respondent registered the domain
name <ccom.com> on August 14, 1997. A copy of the Whois information
concerning the domain name at issue is attached to the Complaint as Exhibit
B.

4.5 Respondent has alleged that "a
search on the Internet yellow pages directory, Switchboard.com yields [sic]
19 listings for companies with C COM or CCOM in their name, and a search
on the popular web site AltaVista.com yield [sic] 11,413 Internet web pages
containing the word CCOM."

4.6 Respondent contends that his
purpose in registering the domain name at issue was to "reserve for itself
a generic domain name that combines the letter 'c,' which is commonly known
among Internet users as a short-hand description for 'relating to computers,'
and the top level domain ('TLD') 'com,' as an abbreviation for communication
and commercial, and is the most popular TLD for commercial entities."

4.7 The domain name at issue resolves
to a web site which states "[t]his website is currently under construction
. . . for info about partnership opportunities or domain availability,
send email to jon.kimball@icapital.com. You are visitor number:" followed
by a counter which records the number of hits on the site. The majority
determined these facts by entering "www.ccom.com" and reviewing the web
page to which it resolved.1 The majority believes that this is the
equivalent in a domain name case to the practice of taking judicial notice.
See, e.g., the United States Federal Rules of Evidence, Rule 201.

5. Parties' Contentions

5.1 Complainant

Complainant contends that Respondent
has registered as a domain name a mark which is identical to the service
mark and trademark registered and used by Complainant, that Respondent
has no rights or legitimate interests in respect to the domain name at
issue, and that Respondent has registered and is using the domain name
at issue in bad faith.

5.2 Respondent

Respondent contends that the Second
Level Domain ("SLD") name at issue is different from Complainant's service
mark in that the SLD "ccom" does not contain the hyphen in "c-com." Respondent
contends that there is no likelihood of confusion, that there is no evidence
of actual confusion, that Complainant has failed to prove that Respondent
has no rights to or legitimate interests in respect of the domain name
at issue, and that Complainant has failed to prove that Respondent has
registered and is using the domain name at issue in bad faith.

6. Discussion and Findings

6.1 Paragraph 15(a) of the Rules
instructs the Panel as to the principles the Panel is to use in determining
the dispute: "A Panel shall decide a complaint on the basis of the statements
and documents submitted in accordance with the Policy, these Rules and
any rules and principles of law that it deems applicable." Since both the
Complainant and Respondent are domiciled in the United States, and since
United States' courts have recent experience with similar disputes, to
the extent that it would assist the Panel in determining whether the Complainant
has met its burden as established by Paragraph 4(a) of the Policy, the
Panel shall look to rules and principles of law set out in decisions of
the courts of the United States.

6.2 Paragraph 4(a) of the Policy
directs that the Complainant must prove each of the following:

1) that the domain name registered
by the Respondent is identical or confusingly similar to a trademark or
service mark in which the Complainant has rights; and,

2) that the Respondent has no legitimate
interests in respect of the domain name; and,

The majority believe that the discussion
of the dissent and those cases it cites elevates form over substance2.
Moreover, this disagreement over what is necessary for a second level domain
name to be identical to a trademark or service mark, rather than merely
confusingly similar, is more than academic. If the dissent's reasoning
were accepted it would be very easy in the future for a prospective cybersquatter,
by inserting or deleting a hyphen, to avoid the impact of the holding in
Shirmax Retail Ltd./Detaillants/Shirmax LTEE v. CES Marketing Group, Inc.,
Case No. AF0104 (sometimes referred to as the "thyme.com case").

In the thyme.com case, the Panel
found that if it were determined that a domain name is identical to a mark,
then such a determination would satisfy the first of the three prong test
for bad faith under the Policy, and there is no need to show a likelihood
of confusion. If the dissent's reasoning were to be adopted, a would-be
cybersquatter could simply eliminate the hyphen in "Hewlett-Packard" or
insert a hyphen in "Microsoft" and thereby avoid an automatic finding of
bad faith under 4(a)(i) of the Policy. Such conduct should not be encouraged.

6.5 Indeed, decisions have held that
such conduct is in and of itself evidence of bad faith. "Bad faith on the
part of the Respondents is to be inferred from using a hyphen as a device
to obtain what is to all intents and purposes a domain name which is identical
to Claimant's service mark and earlier registered domain name." SeekAmerica
Networks Inc. v. Tariq Masood and Solo Signs, ICANN Case No. D2000-0131.

6.6 Rule 15(a) provides in pertinent
part that the "Panel shall decide a complaint on the basis of the statements
. . . submitted . . . ." Complainant has stated in its certified Complaint
that "[Respondent] has no rights or legitimate interest in the domain [<ccom.com>]
based on [Complainant's] continuous and long prior use of its mark ccom."
Complaint, 9, at 3.

6.8 Respondent failed to make any
of the showings described in Paragraph 4(c) of the Policy.

6.9 Moreover, Complainant's registration
of its service mark preceded Respondent's registration of the domain name
at issue by some seven months. Thus, at the time Respondent registered
the domain at issue, it had constructive notice of Complainant's service
mark. Finter Bank Zurich v. Gianluca Olivier, ICANN Case No. D2000-0091;
Barney's, Inc. v. BNY Bulletin Board, ICANN Case No. D2000-0059. The Panel
believes the reason for finding constructive notice is both realistic and
practical. It is easy to do a trademark search online to determine whether
the domain name which one intends to register is identical or confusingly
similar to someone's registered mark. Indeed, Respondent performed similar
searches prior to filing his Response, and Respondent found 19 listings
for companies with "c-com" or "ccom" in their names and 11,413 Internet
web pages containing the word, "ccom." Had Respondent, prior to registration,
performed a Trade Mark search or searches similar to those he performed
prior to filing the response, and had he been acting in good faith, Respondent
might have registered a different name entirely.

6.11 The most difficult question
facing the Panel is whether the Respondent has registered and is using
the domain name at issue in bad faith. Policy, 4(a)(iii).

6.12 Respondent's conduct does not
bring it within any of the illustrations of bad faith registration and
use set out in Paragraph 4(b) of the Policy. However, the majority believes
that all of the facts, when taken together, are evidence of bad faith registration
and use. Telstra Corporation Limited v. Nuclear Marshmallows, ICANN Case
No. D2000-0003.

6.13 As set out, supra, at
6.8, Respondent had constructive notice of Complainant's registered service
mark at the time that Respondent registered the domain name at issue. To
the extent that Respondent has established that others have registered
"ccom" as a mark in other commercial fields or geographical areas, Respondent
would have had constructive knowledge of any marks registered prior to
his registration of the domain name at issue.

6.14 The facts that the domain name
at issue resolves to a web site at which the SLD name does not appear,
that the site indicates it is "under construction," that it is suggested
that the Respondent be contacted regarding domain name availability, that
a counter is prominently featured which registers the number of visits
to the site, and that the Respondent has failed to make a bona fide use
of the domain name at issue for almost three years, when taken together
constitute bad faith use.

6.15 It has been held that failure
to make a bona fide use of a domain name during a two-year period following
registration constitutes bad faith. Mondich and American Wine Biscuits,
Inc. v. Brown, ICANN Case No. D2000-0004. The majority believes this reasoning
is sound. A registrant should be given sufficient time to make preparations
to use the registered domain name, but the "parking" of a domain name is
evidence of bad faith registration and use. Beverages and More, Inc. v.
Glenn Sober Mgmt., ICANN Case No. AF-0092.

6.16 It has also been held that the
use of a counter at the web site to which the domain name resolves without
other content is tantamount to an offer to sell the domain name. Home Interior
& Gifts, Inc. v. Home Interiors, ICANN Case No. D2000-0010. In World
Wrestling Federation v. Bosman, ICANN Case No. D1999-0001, the Panel held
that under 4(b)(i) of the Policy, an offer to sell the domain name at issue
for more than the costs incurred constituted evidence of bad faith registration
and use.

6.17 Finally, the Panel refers to
the decision in Ventura Foods LLC v. Pathi, ICANN Case No. AF-0136, in
which the Panel held: "The Respondent must be shown to be using the domain
name in bad faith. The Respondent has caused a web page to appear announcing
a future web site to internet [sic] users who enter the domain name in
their browsers. This is a use of the domain name, and further is a use
which gives effect to the bad faith with which the name was registered."

6.18 Under all of the facts and circumstances
present here, the majority finds that Respondent has registered and is
using the domain name at issue in bad faith.

7. Decision

For all of the foregoing reasons,
the majority of the Panel decides that the domain name at issue is identical
to the service mark which had previously been registered by the Complainant,
that the Respondent has no rights or legitimate interests in respect of
the domain name at issue, and that the domain name at issue has been registered
and is being used in bad faith. Accordingly, the Panel requires, pursuant
to paragraph 4(i) of the Policy, that the domain name at issue be transferred
to the Complainant.

M. Scott Donahey Presiding Panelist

John TerryPanelist

I dissent for the reasons set forth
in my separate dissenting opinion.

I respectfully dissent from the decision
of the majority of this panel.

The domain name registered by Respondent,
"ccom.com," is plainly not identical to Complainant's trademark for long
distance telephone services, "C-COM," and under the circumstances presented
in this proceeding I would not find it confusingly similar to Complainant's
trademark.

It seems obvious to me that there
cannot be many different domain names that are all identical to the same
trademark. If Complainant's trademark is identical to a domain name, that
domain name is "c.com," or perhaps "c-com.net" or "c-com.com." But it is
not simultaneously identical to all three of these, and it certainly cannot
be identical to them and also to "c-com.org," "ccom.com," "ccom.net," "c-c-o-m.com,"
"c--com.com," and numerous other permutations of these characters and top-level
domains.

Furthermore, I see no need to interpret
the identicality requirement so liberally, since the UDRP applies to domain
names that are confusingly similar as well as those that are identical.
As noted in Shirmax Retail Ltd. v. CES Marketing Group Inc., ICANN Case
No. AF-0104 (DeC Mar. 20, 2000), identicality merely relieves the trademark
owner of the need to prove that confusion is likely. In particular, a domain
name that merely adds or subtracts a hyphen from a trademark is almost
certain to be found confusingly similar to that trademark, but it clearly
is not identical to the trademark.

The domain name and trademark at
issue in this case are so similar that confusion seems almost inevitable.
Yet Complainant has not even alleged that Respondent's domain name is confusingly
similar to its trademark. Complainant's only allegation on the issue of
identicality or confusing similarity is as follows: "Kimball's domain name,
'ccom.com,' is identical to Chernow's registered trademark CCOM." Of course,
Complainant's trademark is "C-COM," not "CCOM," although the discrepancy
appears more likely to be a typographical error than a deliberate attempt
to mislead the panel. Nonetheless, the fact remains that Complainant has
alleged identicality but has not alleged confusing similarity.

Complainant may have elected not
to pursue a claim of confusing similarity for strategic reasons, or (perhaps
more likely) due to oversight. Had Complainant chosen to raise the issue
of confusing similarity, Respondent might well have been able to present
a plausible counterargument. denticality and confusing similarity are two
distinct theories -- confusing similarity is not merely a lesser included
version of identicality, and alleging one of these does not automatically
allege the other. In any event, Complainant was represented in this proceeding
by capable legal counsel, and I see no need to supplement the allegations
that Complainant actually made with others that Complainant chose not to
include, or to afford Complainant a second opportunity to allege what frankly
is an obvious component of a prima facie case under the UDRP.

I would hold that Complainant failed
to satisfy the first element of the UDRP, identicality or confusing similarity.

With regard to the second element,
I agree with the majority's conclusion that Complainant has met its burden
of proving that Respondent has no rights or legitimate interests in respect
of the domain name at issue.

Finally, with regard to the third
element, I would find that Complainant has failed to meet its burden of
proving that Respondent has registered and is using the domain name in
bad faith.

The majority finds bad faith registration
and use based upon the totality of circumstances in this case, even though
Respondent's conduct admittedly does not satisfy any of the illustrations
set forth in Paragraph 4(b) of the Policy. This case bears so little resemblance
to Telstra Corp. v. Nuclear Marshmallows, ICANN Case No. D2000-0003 (WIPO
Feb. 18, 2000), cited by the majority to support this proposition, that
a comparison of the two cases would be pointless. The only fact properly
before this panel that is even relevant to the question of bad faith registration
(apart from Respondent's statement that he was unaware of Complainant's
trademark when he registered the domain name) is that Respondent registered
the domain name "ccom.com" on August 14, 1997, nearly seven months after
Complainant obtained its trademark registration for "C-COM." The majority
notes that the domain name at issue here resolves to a web site that suggests
that the name may be for sale, and that Respondent has failed to make a
bona fide use of the domain name for almost three years. However, neither
of these facts is properly before the panel, and indeed neither fact has
even been alleged by Complainant.

The existence of a prior trademark
registration does not automatically render a domain name registration in
bad faith. In Finter Bank Zurich v. Olivieri, ICANN Case No. D2000-0091
(WIPO Mar. 23, 2000), cited by the majority, the respondent had offered
two domain names for sale to the complainant only twelve days after he
registered them. In Barney's, Inc. v. BNY Bulletin Board, ICANN Case No.
D2000-0059 (WIPO Apr. 2, 2000), the other decision cited by the majority
on this point, the panel inferred bad faith registration of the respondent's
domain name from the fame and presumably the distinctiveness of the complainant's
mark, not merely from the fact that the trademark registration predated
the domain name registration.

To the extent that Mondich v. Brown,
ICANN Case No. D2000-0004 (WIPO Feb. 16, 2000), holds that bad faith registration
need not be proved if a domain name owner fails to make "bona fide use"
of the name for two years, I believe the decision is contrary to the clear
language of the UDRP, which requires that both registration and use be
in bad faith. See, e.g., World Wrestling Federation Entertainment, Inc.
v. Bosman, ICANN Case No. D99-0001 (WIPO Jan. 14, 2000) (inferring bad
faith registration from registrant's attempt to sell domain name to complainant
three days after registering it). Passively holding or "parking" a domain
name for an extended period may well be relevant to bad faith use, but
it does nothing to show that the name was originally registered in bad
faith. In Beverages & More, Inc. v. Glenn Sobel Mgt., ICANN Case No.
AF-0092 (DeC Mar. 9, 2000), the panel considered the respondent's "admissions,
evasive tactics, gratuitously vituperative and wholly unsupported allegations
about the purported motives and actions of opposing counsel, as well as
the other facts and circumstances adduced by Claimant" in concluding that
the respondent had registered its domain name in bad faith. Similarly,
in Telstra Corp. v. Nuclear Marshmallows, the panel found bad faith registration
based in part upon the respondent's deliberate attempts to conceal its
identity and the fact that the respondent must have known at the time that
it registered the domain name that it could not possibly make legitimate
use of the name.

I do not believe there is a sufficient
basis in this record to support a finding that Respondent has registered
or is using the domain name in bad faith.

Since I believe that Complainant
has failed to meet the first and third requirements set forth in the UDRP,
I would deny its request for relief. I therefore respectfully dissent from
the decision reached by my fellow panelists.

David E. SorkinPanelist

Dated: May 18, 2000

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